Velda Bartek et al.

Patent Trials and Appeals Board

Aug 8, 2019

14258449 - (D) (P.T.A.B. Aug. 8, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/258,449 04/22/2014 Velda Bartek RSW920130171US1-231 7702
44870 7590 08/08/2019
MOORE & VAN ALLEN, PLLC For IBM
ATTN: IP DEPARTMENT
100 North Tryon Street
Suite 4700
Charlotte, NC 28202
EXAMINER
NILSSON, ERIC
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
08/08/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VELDA BARTEK, ERIC LEONARD MASSELLE, and
PATRICK GABRIEL MCGOWAN
___________

Appeal 2018-0053081
Application 14/258,449
Technology Center 2100
_________________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge ARPIN.

Opinion Dissenting filed by Administrative Patent Judge THOMAS.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 11–14, 17–19, and 21–24, all of the pending claims.

1 In this Decision, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
November 8, 2017) and Reply Brief (“Reply Br.,” filed April 27, 2018); the
Final Office Action (“Final Act.,” mailed June 15, 2017); the Examiner’s
Answer (“Ans.,” mailed March 1, 2018; and the originally-filed
Specification (“Spec.,” filed April 22, 2014)). Rather than repeat the
Examiner’s findings and determinations and Appellants’ contentions in their
entirety, we refer to these documents.
2 Appellants assert International Business Machines (IBM) Corporation is
the real party-in-interest. App. Br. 1.
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Final Act. 2. Claims 1–10, 15, 16, and 20 are cancelled. App. Br. 10–14
(Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellants’ recited systems and computer program products “relate to
decision making, and more particularly to a method, system and computer
program product for autonomic group decision making using impedance
scores.” Spec. ¶ 1.
During a group decision making event or process, a group
of decision makers typically desire or need to converge to a
single decision option chosen from a set of options. An
impedance score may be associated with each participant or
decision maker in the group decision-making event. The
impedance score of each participant may be based upon the
behavior of the participant during the decision making process.
A participant with a higher impedance score compared to others
may indicate a greater resistance by the participant to
convergence to the single decision option, whereas a participant
with a lower impedance score may indicate behaviors by the
participant that are conducive to convergence to the single
decision option.
Id. ¶ 17 (emphasis added).
As noted above, claims 11–14, 17–19, and 21–24 are pending.
Claims 11 and 18 are independent. App. Br. 10–11 (claim 11), 12–14 (claim
18) (Claims App.). Claims 12–14, 17, and 21–24 depend directly or
indirectly from claim 11; and claim 19 depends directly from claim 18. Id.
at 10–15.
Claim 11, reproduced below with disputed limitations emphasized, is
representative.
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11. A system for autonomic group decision making,
comprising:
a processor;
a group decision making module operating on the
processor, the group decision making module being configured
to perform a set of functions comprising:
presenting a plurality of decision options to each
decision maker of a group of decision makers;
receiving at least one decision option selected by
each decision maker from the plurality of decision options;
presenting a decision making result to each decision
maker, the decision making result comprising an
indication of the preference for each of the decision
options by the group of decision makers;
allowing each decision maker to revise the at least
one decision option previously selected by the decision
maker for convergence to a single decision option by the
group of decision makers;
determining an impedance score for each decision
maker in response to at least one decision maker selecting
a different at least one decision option from one previously
selected, the impedance score of each decision maker
being based on at least one action of a set of actions by the
decision maker regarding selecting the at least one
decision option, wherein a level of the impedance score
indicates either a progression toward convergence to the
single decision option or away from convergence to the
single decision option by the decision maker associated
with the impedance score;
revising the impedance score for a particular
decision maker each time the particular decision maker
selects a revised at least one decision option; and
presenting the single decision option in response to
the decision makers converging on the single decision
option; and
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wherein the system further comprises a selection engine,
wherein the at least one decision option selected by each decision
maker comprises a multiplicity of decision options selected by
each decision maker, and wherein the single decision option is
selected in response to expiration of a preset time period, the
selection engine being configured to perform a set of functions
comprising:
determining a weighting associated with each
decision maker based on the impedance score of each
decision maker;
assigning a value to each of the multiplicity of
decision options based on a preference for a particular
decision option by each decision maker, a highest
preferred decision option being assigned a highest value
and a lowest preferred decision option being assigned a
lowest value;
calculating a score for each of the multiplicity of
decision options selected by each decision maker by
multiplying the weighting associated with the decision
maker by the value of each of the multiplicity of decision
options selected by the decision maker; and
adding the scores from each decision maker for each
respective decision option of the multiplicity of decision
options selected by each decision maker, wherein the
decision option having the highest score is selected as the
single decision option.
Id. at 10–11 (emphasis added).
REJECTION
The Examiner rejects claims 11–14, 17–19, and 21–24 under
35 U.S.C. § 101 as directed to patent ineligible subject matter.3 Final Act.
2–4. We review the appealed rejection for error based upon the issues

3 The Examiner also provisionally rejects claims 11–14, 17–19, and 21–24
under the judicially-created doctrine of obviousness-type double patenting in
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identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). For the reasons given below, we do not sustain the
Examiner’s rejection.
ANALYSIS
Patent Eligible Claims
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of

view of the claims of a co-pending patent application. Final Act. 4–8.
Because this is a provisional rejection and because Appellants indicate that
they will file an appropriate terminal disclaimer to overcome this rejection,
we do not address this rejection further in this decision. Reply Br. 4; see
Final Act. 5; see also MPEP § 804(I)(B)(1)(b)(iv) (discussing procedure
after reversal on appeal).
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). According to the Court, concepts determined to be abstract
ideas and, thus, patent ineligible, include certain methods of organizing
human activity, such as fundamental economic practices (Alice, 573 U.S. at
219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that “[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Id. at 187; see also BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
Cir. 2016) (Even if the individual components were known, “an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application of that abstract idea” (emphasis added).).
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If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).4 In Step One of our analysis, we
look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:

4 This guidance supersedes previous guidance memoranda. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (“All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.”); see App. Br. 7–8.
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(1) Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP5
§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Appellants’ independent claims 11 and 18, and their associated
dependent claims, are directed to systems (i.e., a “machine”) and computer
program products comprising a computer readable storage medium6 (i.e., a

5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
6 The Specification states that “[a] computer readable storage medium, as
used herein, is not to be construed as being transitory signals per se . . . .”
Spec. ¶ 11. Nevertheless, if prosecution resumes, Appellants should amend
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“composition of matter”), respectively. App. Br. 10–14 (Claims App.).
Thus, the pending claims are directed to recognized statutory categories.
Despite being directed to a different statutory category, the limitations
of claim 18 closely track those of claim 11. See App. Br. 8. Claim 11 and
claim 18 recite the same functions or instructions, i.e., steps, for performing
the decision making process. Therefore, we focus our analysis on the
limitations of claim 11. See also Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1341 (Fed. Cir. 2013) (“Although
CLS Bank issued as a plurality opinion, in that case a majority of the court
held that system claims that closely track method claims and are grounded
by the same meaningful limitations will generally rise and fall together.”)
(Citation omitted).
D. Two-Part Alice/Mayo Test
1. Step 2A, Prong One – Claims Recite an Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner concludes claim 11 recites the abstract idea “of determining an
impedance score of a plurality of decision makers based on their decisions
which indicates progression towards or away from convergence to a single
decision.” Final Act. 2. Appellants do not contest that the claims recite an
abstract idea. See App. Br. 5 (“Turning initially to the rejection of
independent claim 11 under 35 U.S.C. §[]101, Applicant respectfully
submits that independent claim 11 recites substantially more than an abstract
idea and is patent eligible under 35 U.S.C. §[]101.”). Although we agree

claim 18 to clarify that the computer readable storage media encompassed
by this claim is “non-transitory.” See MPEP § 2106(II).
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with the Examiner that the claims recite an abstract idea, we determine that
the Examiner has identified that abstract idea too narrowly. We conclude
that the claims recite “group decision making.” App. Br. 10 (claim 11), 12
(claim 18); see Spec. ¶ 1.
The Examiner explains,
Claims 11 and 18 recite, in part, a group decision module
configured to present a plurality of decision to each decision
maker, receive a decision option selected by the decision maker,
present a result to each decision maker indicating a preference of
each option by the group, allow the decision makers to revise an
option, determine an impedance score for each decision maker in
response to selecting a different decision option wherein the
impedance score is based on the selecting of an option by the
decision maker and a level of the impedance score indicates a
progression towards or away from convergence to a single
decision option, revise the impedance score each time a decision
option is revised, and presenting the single decision option in
response to convergence to a single decision.
Final Act. 3; see App. Br. 10–11 (Claims App.).
The Examiner further determines that the abstract idea recited in
claim 11 is similar to the abstract idea recited in Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, our
reviewing court found that “[t]he focus of the asserted claims . . . is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis.” 830 F.3d at 1353. Thus, the Examiner concludes
that, like the abstract idea identified in Electric Power, “[r]eceiving decision
results is collecting information[, d]etermining impedance of decision
makers through determining weights, assigning values and calculating the
scores is the analysis step based on the collected information[, and, l]astly, a
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final decision is presented to the decision makers as a result.” Ans. 10
(emphases added).
Claim 11’s limitations, under their broadest reasonable interpretation,
recite “managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions),” which fall within the broader category of “[c]ertain methods
of organizing human activity.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52. Thus, we are persuaded that the
pending claims recite an abstract idea, namely “[c]ertain methods of
organizing human activity.” See Final Act. 9 (“This is more akin to a
method for organizing human activity by computerizing deliberation.”);
Ans. 9 (“The claims can be considered an improvement in decision making,
voting or deliberation which is merely organizing human activity and is still
an abstract idea.”).
2. Step 2A, Prong Two – Abstract Idea Integrated Into Practical
Application
The system recites that its various steps involve operations of various
functions of a group decision making module on a processor. App. Br. 10–
11 (Claims App.) The Examiner determines,
The additional elements of a “processor” [(claim 11)] and
“computer readable storage medium” [(claim 18)] are recited at
a high level of generality and perform generic computer
functions. The use of generic computer components to receive
the decisions and determine an impedance score does not impose
any meaningful limit on the computer implementation of the
abstract idea. The claims could be performed without the use of
computers and purely through human actions.
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Final Act. 3 (emphasis added).7 For the reasons given below, even if the
Examiner is correct, this is not dispositive here.
To determine whether claim 11 integrates the abstract idea into a
practical application, we consider the additional elements recited in
claim 11, i.e., those components, features, limitations, or steps that the claim
recites beyond the abstract idea itself. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 55 n.24. In claim 11, the additional
components are a “processor” and “a group decision making module” and a
“selection engine” operating on the processor. App. Br. 10–11 (Claims
App.). These additional components, considered individually and in the
context of claim 11 as a whole, do not integrate the abstract idea into a
practical application. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 55 nn.25 & 27–32 (citing MPEP § 2106.05(a)–
(c), (e)–(h)). Considered individually, these additional elements are merely
generic computer components and techniques. See Spec. ¶¶ 13 (known
software transferring information via known networks), 15 (“a processor of a
general purpose computer”), 55 (known interfaces), 56 (known computer
components). As such, these additional elements merely add generic
computer activity to the collecting, analysis, and presentation of information
between decision makers, which is insufficient to integrate the judicial
exception into a practical application. See MPEP § 2106.05(a). Thus, the

7 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate those considerations under the first part of the
Alice/Mayo analysis (Step 2A of the Office guidance). See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.
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Examiner concludes “[t]he combination of the abstract elements and the
generically stated technical elements merely using the computer as a tool do
not amount to significantly more than the abstract idea.” Ans. 10–11.
Appellants contend, however, that claim 11 recites a technological
improvement. App. Br. 6–7. In particular,
The technological improvement provided by the present
invention as recited in the claims is for autonomic group decision
making by providing computer performance of a function that
was unable to be performed by a group of decision makers,
namely, selecting a single decision option from a plurality of
decision options by computer-implementation of a set of rules
after the group of decision makers were unable to converge on a
single decision option after expiration of the preset time period.
The autonomic group decision making is performed after any
human activity has failed to converge on a solution and is
performed without further human activity.
Reply Br. 3 (emphases added). As claim 11 recites, “the single decision
option is selected in response to expiration of a preset time period.” See
App. Br. 10–11 (Claims App.). Thus, the recited decision making process
makes a selection once the decision makers fail to achieve complete
convergence within a preset time period. Thus, we are persuaded that “the
present invention as recited in the claims cannot be performed purely
through human actions and without the use of computers” applying a set of
rules. Reply Br. 3; see Ans. 9–10.
In McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016), our reviewing court found that “the claimed
improvement . . . is allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators.” The human
animators, however, used subjective determination, rather than specific
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limited mathematical rules, to accomplish animation. Id. at 1314. As in
McRO, Appellants contend that
the present invention as recited in claim 11 describes a specific
way (using computer-implemented rules or conditions to
determine a weighting associated with each decision maker;
assigning a value to each of the multiplicity of decision options;
calculating a score for each of the multiplicity of decision
options; and determining the single decision option from the
scores) to solve the problem of selecting a single decision from
a plurality of decision options when a group of decision makers
are unable to do so after expiration of a preset time period.
App. Br. 6–7 (emphasis added). Decision makers are not known to make
group decisions based upon weightings derived from impedance scores,
which weightings are applied to decision option values, and, ultimately,
upon the summation of the weighted option values for the various decision
makers. See Final Act. 8 (novelty and obviousness rejections have been
withdrawn); see also McRO, 837 F.3d at 1314–15 (“The prior art ‘animator
would decide what the animated face should look like at key points in time
between the start and end times, and then “draw” the face at those times.’
The computer here is employed to perform a distinct process to automate a
task previously performed by humans. . . . It is the incorporation of the
claimed rules, not the use of the computer, that ‘improved [the] existing
technological process’ by allowing the automation of further tasks. This is
unlike Flook, Bilski, and Alice, where the claimed computer-automated
process and the prior method were carried out in the same way.” (citations
omitted)).
As our reviewing court concluded in McRO,
the automation goes beyond merely “organizing [existing]
information into a new form” or carrying out a fundamental
economic practice. The claimed process uses a combined order
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of specific rules that renders information into a specific format
that is then used and applied to create desired results . . . . While
the result may not be tangible, there is nothing that requires a
method “be tied to a machine or transform an article” to be
patentable.
McRO, 837 F.3d at 1315 (citations omitted). The same is true here.
Although claim 11 recites no particular hardware to accomplish the
recited functions, and the Specification only describes generic hardware for
this purpose (see Spec. ¶¶ 13, 15, 55, 56, 59), we are persuaded that the
claim recites other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment. MPEP
§ 2106.05(h). In view of Appellants’ claims and Specification, and for
reasons similar to those set forth in McRO, we conclude that the pending
claims integrate the judicial exception into a practical application and that
the claims are not directed to an abstract idea.
3. Step 2B –Significantly More than the Abstract Idea
Because we determine that, although the claims recite an abstract idea,
they integrate that abstract idea into a practical application; we do not reach
whether the claims include additional limitations, such that the claims
amount to significantly more than the abstract idea.
E. Lack of Preemption
Appellants also contend, “the specific features of independent
claims 11 and 18 and the other claims of the present application do not
preempt any and all ways of autonomic group decision making.” Reply
Br. 3 (citation omitted). “[Q]uestions on preemption are inherent in and
resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). Nevertheless, like McRO, the
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limitations in claim 11 here prevent preemption of all processes for
achieving autonomic group decision making. Appellants demonstrate that
their autonomic group decision making steps provide an alternative process
for group decision making. E.g., Spec. ¶ 33 (“If the group of decision
makers have not converged to the single decision option, the method 100
may return to block 110 and the method 100 may continue similar to that
previously described. If the group of decision makers have converged to the
single decision option in block 116, the method 100 may advance to block
118.”); see McRO, 837 F.3d at 1315 (“There has been no showing that any
rules-based lip-synchronization process must use rules with the specifically
claimed characteristics.”). As in McRO, the pending claims use specific and
limited rules in a process specifically designed to achieve an improved
technological result when a conventional decision making process fails to
achieve convergence in a preset time period. Id. at 1316.
On this record, we agree with Appellants that independent claim 11,
as well as independent claim 18, is not directed to an abstract idea. Thus, we
are persuaded that the Examiner erred in determining that these claims are
patent ineligible, and we do not sustain the rejection of these independent
claims, or the pending claims dependent therefrom.
CONCLUSIONS
1. The Examiner erred in rejecting claims 11–14, 17–19, and 21–24
under 35 U.S.C. § 101, as directed to patent-ineligible subject matter.
2. Thus, claims 11–14, 17–19, and 21–24 are not unpatentable.
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DECISION
We reverse the Examiner’s rejection of claims 11–14, 17–19, and 21–
24.

REVERSED

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VELDA BARTEK, ERIC LEONARD MASSELLE, and
PATRICK GABRIEL MCGOWAN
___________

Appeal 2018-005308
Application 14/258,449
Technology Center 2100
_________________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge, Dissenting.

DISSENTING OPINION
I respectfully dissent from the Majority’s decision to reverse the
Examiner’s rejection of claims 11–14, 17–19, and 21–24 under 35 U.S.C.
§ 101. Specifically, I disagree with the Majority’s view that independent
claim 11 is patent eligible under Step 2A, Prong Two of Alice and the
Revised Guidance framework.
Before addressing Step 2A, Prong 2, I first acknowledge that I agree
with the majority that claim 11 recites “group decision making,” which we
conclude is certain methods of organizing human activity (Decision 11).
However, I would add that for at least the following reasons, I believe
representative claim 11 recites plural abstract ideas, i.e., also recites mental
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processes.
For example, claim 11 recites at least the following limitations:
(1) “presenting a plurality of decision options to each decision maker,”
(2) “receiving at least one decision option selected by each decision maker,”
(3) “presenting a decision making result,” (4) “allowing each decision maker
to revise . . . option previously selected,” (5) “determining an impedance
score for each decision maker,” (6) “revising the impedance score,” and
(7) “presenting the single decision option.”
These limitations, under their broadest reasonable interpretation,
recite mental processes that people can perform using their minds or pen and
paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can
be performed in the human mind, or by a human using a pen and paper” is
directed to an unpatentable mental process). This is true even if the claim
recites that a generic computer component performs the acts. See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also 2019
Eligibility Guidance 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.”).
I believe each of the aforementioned limitations can practically be
performed in the mind or using pen and paper. Thus, I disagree with the
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majority that “‘the present invention as recited in the claims cannot be
performed purely through human actions and without the use of computers’
applying a set of rules” (Decision 13).
For example, people can perform the “presenting” and “receiving”
steps by simply passing a piece of paper, with the options noted thereon, to
all decision makers, selecting one such option via pen, visually observing the
results after all have made a selection, and passing a piece of paper around
showing the single or various results selected. People can perform the
“allowing” step by simply letting a person change their mind and select
another option. People can perform the “determining” and “revising” steps
by using pen and paper to assign a score to an individual based on observing
their behaviors regarding willingness to change their minds, and revising the
score each time the decision maker further changes his/her mind.
Claim 11 further recites at least the following limitations:
(a) “wherein the single decision option is selected in response to expiration
of a preset time period,” (b) “determining a weighting associated with each
decision maker,” (c) “assigning a value to each of the multiplicity of
decision options,” (d) “calculating a score,” and (e) “adding the scores.”
Again, I believe these limitations, under their broadest reasonable
interpretation, recite mental processes that people can practically perform
using their minds or pen and paper. For example, people can perform the
selecting in response to expiration of a preset time period by simply waiting
for that time period to past, either by counting or observing a clock, before
noting a selection. People can perform the “determining a weighting” and
“assigning a value” steps by simply using pen and paper to rank
preferences/opinions from high to low and giving a higher value to options
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of greater interests. Finally, people can perform the “calculating” and
“adding” steps by simply multiplying the weights associated with the
decision maker by the value and then adding the scores (i.e., non-
complicated mathematical functions), and observing the option with the
highest score and selecting that as the single decision option.
As illustrated in Appellants’ Specification:
During a group decision making event or process, a group
of decision makers typically desire or need to converge to a
single decision option chosen from a set of options. An
impedance score may be associated with each participant or
decision maker in the group decision-making event. The
impedance score of each participant may be based upon the
behavior of the participant during the decision making process.
A participant with a higher impedance score compared to others
may indicate a greater resistance by the participant to
convergence to the single decision option, whereas a participant
with a lower impedance score may indicate behaviors by the
participant that are conducive to convergence to the single
decision option. Behaviors conducive to convergence may
include, but are not necessarily limited to actions such as
specifying a larger number of preferred options, foregoing the
option to rank preferred selections, quicker modification of
preferred selections to accommodate the choices of others or
earlier acceptance or selection during the decision making
process of the decision option preferred by most other
participants or decision makers, and any other actions that may
reduce the time for convergence to the single decision option by
all or at least most participants.
Spec. ¶ 17.
Furthermore, Appellants’ Specification describes how the various
calculations can be performed (see Spec. ¶¶ 20–24), all of which I believe
can practically be performed in the mind or using pen and paper, but for the
recitation in the claims of generic computer components.
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Therefore, for at least the aforementioned reasons, I agree with the
majority that claim 11 recites an abstract idea, which I conclude is both
certain methods of organizing human activity and additionally mental
processes.
Step 2A—Prong 2 (Integration into Practical Application) 8
Under the Revised Guidance, I now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
I discern no additional element (or combination of elements) recited in
Appellants’ representative claim 11 that integrates the judicial exception into
a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(“Prong 2”). Although I agree with the majority that Appellants’ claimed
additional elements (e.g., “a processor,” “a group decision making module,”
and “a selection engine”) do not integrate the abstract idea into a practical
application (see Decision 12), I disagree with the majority that the claimed
invention is nonetheless patent eligible because of being similar to the
claims in McRO (see Decision 13–15).
I believe Appellants’ claimed additional elements do not: (1) improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not

8 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.

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applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(a)–(c), (e)–(h).
Appellants contend that “[s]imilar to setting morph weights and
transition parameters, rather than using human artists, in McRO, the present
invention, as recited in claim 11, also removes the human aspect and applies
the computer-implemented rules” (App. Br. 6) “a specific way . . . to solve
the problem of selecting a single decision” (id. at 6–7).
I find Appellants’ arguments unpersuasive. That is, here the arguably
innovative technique of the appealed claims is inextricably a part of the
abstract idea of “group decision making.” Moreover, I believe nothing in
the claims, understood in light of the Specification, requires anything other
than an off-the-shelf conventional computer used for collecting and
processing/analyzing various information/data. Therefore, it is my view that
the claims are directed not to an improvement in computer capabilities or
other technology, but to the results of applying an abstract idea.
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. I, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea, and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, I believe the claims are merely directed to a result or effect that itself
is the abstract idea.
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Furthermore, as highlighted by the majority, the Specification merely
describes generic computer components performing generic computer
functions that are routine and conventional, and are performing the normal,
basic functions of a computer (see Decision 12). See Electric Power, 830
F.3d at 1355 (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.”). In SiRF, the court explained that:
In order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the utilization
of a computer for performing calculations.
SiRF Tech., Inc. v. Int'l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir.
2010); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada,
687 F.3d 1266, 1277–78 (Fed. Cir. 2012).
Here, I believe the introduction of the additional elements are merely
to achieve convergence to a single decision option more quickly, i.e., after
expiration of a preset time period, instead of waiting for the decision makers
(i.e., “The process may continue in this inefficient manner until a consensus
or solution is reached.” Spec. ¶ 2.), as opposed to being a significant part in
permitting the claimed method to be performed.
Additionally, the majority suggests that the withdrawal of the novelty
and obviousness rejections shows that “Decision makers are not known to
make group decisions” as claimed (see Decision 14). Although the second
step in the Alice/Mayo framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
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but rather, a search for “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217–
18 (quoting Mayo, 566 U.S. at 73). “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). I
point out that a novel and nonobvious claim directed to a purely-abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89–91.
The dispositive issue is not whether claim 11 is patentable over the
prior art, but whether claim 11 is directed to patent-eligible subject matter
that improves the existing technological process, as in McRO.
As for the majority’s reliance on McRO, I first note that the additional
elements that the majority rely upon (e.g., wherein the single decision option
is selected in response to expiration of a preset time period), are not in fact
additional elements, but rather a part of the abstract idea itself. As stated by
the Supreme Court in Alice, Mayo made clear that transformation into a
patent-eligible application requires “more than simply stat[ing] the [abstract
idea] while adding the words ‘apply it.”’ Alice, 573 U.S. at 221 (quoting
Mayo, 566 U.S. at 72).
I believe the relevant question here is whether claim 11 does more
than simply instruct a processor to implement the abstract idea by using
conventional calculations (i.e., ranks, scores, weights, multiplication, and
addition) to select an option. I believe, when considered as a whole, claim
11 recites a generic computer to perform the abstract concept of using
scores, values, and calculations to perform group decision making.
Therefore, the recitations of claim 11 do not add significantly more to
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transform the abstract idea into patent-eligible subject matter and, because
claim 11 simply uses a generic computer to implement an abstract idea,
claim 11 does not improve the existing technology in the way McRO’s rules
with specific characteristics that transform the abstract idea of McRO.
In other words, the rules in McRO allowed the computer to solve a
technological problem by producing accurate and realistic synchronization
in animated characters that could only previously be produced by humans.
In contrast with McRO, it is my position that Appellants do not identify any
specific rules in the claim that are used by the claimed processor to solve a
technological problem, let alone identify specific rules that act in the same
way as the specific rules enabling the computer in McRO to generate
computer animated characters. Rather than solving a technological problem,
Appellants’ claim seeks to solve a “timing” issue, i.e., how to more quickly
reach convergence in a decision making process between two or more
people. I, therefore, find insufficient evidence of record to support the
argument that Appellants’ claim 11 is similar to the claim in McRO, where
computers were unable to make certain subjective determinations, i.e.,
regarding morph weight and phoneme timings, which could only be made
prior to the McRO invention by human animators.
Rather than paralleling the claims in McRO, I agree with the Examiner
(see Ans. 10) that claim 11 is substantially similar to the claims that the
Federal Circuit determined were patent-ineligible in Electric Power Group,
830 F.3d at 1350. In Electric Power, the court found that the claims were
directed to an abstract idea because “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
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for performing those functions.” Electric Power, 830 F.3d at 1354; see also
id. at 1353–54 (characterizing collecting information, analyzing information
by steps people go through in their minds, or by mathematical algorithms,
and presenting the results of collecting and analyzing information, without
more, as matters within the realm of abstract ideas). Citing Electric Power
in FairWarning, the Federal Circuit held that the claims were directed to
collecting and analyzing information to detect misuse and notifying a user
when misuse is detected, i.e., to a combination of abstract idea categories,
FairWarning and that, as in Electric Power, “the focus of the claims is not
on . . . an improvement in computers as tools, but on certain independently
abstract ideas that use computers as tools.” FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (alteration in original)
(citation omitted).
For at least the reason noted supra, I determine that claim 11
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, I believe representative claim 11 is directed to
the aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, I now must look to
whether claim 11 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) “[a]dds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
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field, which is indicative that an inventive concept may be
present”; or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.”
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
I find no element or combination of elements recited in Appellants’
claim 11 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Appellants have not adequately explained how claim 11 is
performed, such that it is not a routine and conventional function of a
generic computer.
Because I believe Appellants’ independent claim 11 is directed to a
patent-ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” I would sustain the Examiner’s
rejection of the claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice, its’ progeny, and the Revised
Guidance.
I, therefore, respectfully dissent from the Majority Decision reversing
the rejection of claims 11–14, 17–19, and 21–24 under 35 U.S.C. § 101.